[bc-gnso] Online Piracy and Domains

[Phil Corwin <pcorwin@xxxxxxxxxxxxxxxxxx>]

The Senate Judiciary Committee is slated to consider legislation tomorrow, S. 
3084, that would provide the U.S. Department of Justice with new tools against 
domains that intentionally distribute unauthorized copyrighted works or 
counterfeit trademarked goods. The bill was just introduced on Monday and there 
have been no hearings on it.

ICA supports the purpose of the bill but has concerns about some aspects. We 
are speaking with Committee counsel and we are told that many other parties are 
as well. It is also my understanding that ICANN is reviewing the measure.

I have posted the comment appearing below at 
http://www.internetcommerce.org/Online_Infringements_and_Counterfeits_Legislation_Targets_Domains
 . If you are involved with online payments processing, ISP services, or ad 
networks the bill would place requirements on you that may be problematic. 
Other BC members may want to consider whether the claim of extraterritorial 
jurisdiction for US law would be a good precedent, and whether enactment of the 
proposal as introduced would be a plus or minus for ICANN's long term 
independence.

I hope you find this information useful. Best to all.

Proposed Online Infringements and Counterfeits Legislation Targets Domains

On September 20, 2010 Senate Judiciary Committee Chairman Patrick Leahy, joined 
by nine other Senators, introduced S. 3084, the "Combating Online Infringement 
and Counterfeits Act". If enacted, this proposal would expedite Department of 
Justice (DOJ) actions against domains that abet the sale or distribution of 
unauthorized copyrighted materials and counterfeit goods. It would also give 
U.S. law extraterritorial effect by requiring certain actions of third parties 
beyond ICANN-accredited registries and registrars.
The ICA certainly supports effective efforts to curb the online piracy of 
copyrighted materials as well as the distribution of counterfeit goods. But we 
also have some specific and general concerns about the bill as introduced and 
intend to monitor its progress through the legislative process and work with 
lawmakers and other parties of interest to address those concerns.
At the outset, it's important for domain investors and developers to understand 
that this is in no way a new version of the Snowe bill of several years ago, 
which would have set up a domain name trademark infringement regime in addition 
to and in conflict with the Anticybersquatting Consumer Protection Act (ACPA). 
S. 3084 focuses on the activities facilitated by domains, and not on the domain 
name itself. Further, the bill only authorizes actions by the Attorney General 
and creates no new private cause of action.
Also, the seizure of domains involved in facilitating online intellectual 
property (IP) infringement is not unprecedented. The DOJ seized nine 
unauthorized movie streaming websites this spring. While S. 3084 would make 
such domain seizures/blockages a regular part of DOJ IP enforcement actions, to 
the extent that it sets forth statutory standards and requires judicial 
oversight that is probably a good thing. And, while the bill establishes in rem 
jurisdiction against websites, that precedent was established a decade ago by 
the ACPA.
But there are certain aspects of the bill that raise legitimate concerns. Our 
review of its statutory language finds that it covers not just websites that 
directly infringe IP but also those that include "the provision of a link or 
aggregated links to other sites or Internet resources".  While one hopes for 
prosecutorial discretion in utilizing such power, the linkage nexus could 
encompass both search engines and non-infringing websites that unintentionally 
provide 1-click access to infringing materials.
The proposal also allows DOJ to establish a public list of domain names that it 
believes are "dedicated to infringing activities but for which the Attorney 
General has not filed an action". Various parties would be immunized from any 
negative actions they took against such a listed website absent any judicial 
review to prevent mistakes or abuse, and that seems like a highly questionable 
concept at odds with basic due process.
In attempting to reach websites for which neither the registry or registrar is 
domiciled in the U.S., the proposal gives DOJ the authority to cause Internet 
Service Providers, financial transaction providers, and advertising networks to 
block access to and withdraw their services from such domains. This aspect of 
the bill may well be opposed. The banking industry, for one, did not like being 
"deputized" to withdraw payment services from Internet gambling websites and 
has been hoping to get that legislation repealed - a goal shared by House 
Financial Services Committee Chairman Barney Frank.
The proposal also lacks any consideration of defensive factors such as notice 
and takedown policies to remove infringing materials and links - and such 
policies have provided shields for such services as Google and eBay in civil IP 
infringement litigation.
Online fair use and civil liberties groups may well raise their own concerns. 
Public Knowledge, for example, has already issued a statement that reads in 
part:
"The bill has some troubling political and technical implications, particularly 
as it attempts to extend U.S. control over the worldwide Internet addressing 
system.

"Domestically, we are concerned that the bill would establish an Internet black 
list of sites that the Justice Department thinks are 'pirate' sites but against 
which it hasn't taken action.  Putting an innocent site on this list could 
seriously harm the business of legitimate Web site operators.  The remedies in 
the bill for those guilty until they prove themselves innocent are inadequate.

"We are also concerned about some of the vague definitions of what constitutes 
an infringing site and of the level of proof needed.  It's quite possible that 
this bill would have allowed entertainment companies to throttle YouTube at the 
beginning of its creation by alleging piracy and the young company would have 
been unable to defend itself."
The likelihood of enactment in the few remaining days of the 111th Congress is 
exceedingly slim. That said, Chairman Leahy has added the bill to the Judiciary 
Committee's calendar for consideration on September 23rd - and we think that's 
a bad idea. Our experience is that no legislative proposal is perfect upon 
introduction and that proceeding in regular order, with hearings that allow for 
constructive input and subsequent amendment, is the sound way to create good 
law. Judiciary Committee rules allow for any member to object to a bill and 
automatically defer its consideration until the following business meeting and 
we would hope that option is exercised on this proposal.
Aside from tightening the bill's language, any consideration of this measure 
should seriously consider some broader implications. These include whether U.S. 
actions against domains for which there is no domestic nexus will be cited as 
justification by foreign regimes that regularly block their citizens' access to 
websites that contain "subversive" speech and ideas. Further, will such U.S. 
assertions of extraterritorial authority against wholly foreign domains in any 
way undermine ICANN's legitimacy and thereby provide ammunition to those who 
seek to transfer ICANN's functions to the ITU or a similar body -- a 
development that would place DNS management solely in the hands of governments 
to the exclusion of business and civil society?
The goals of this legislation are laudable. But when access to a website is 
blocked, or when it is deprived of critical payments and advertising services, 
the speech and commerce it facilitates are terminated. If mistakes are made the 
operators of such a blocked website may have been effectively denied the 
resources they need to obtain judicial redress. Congress needs to proceed 
deliberatively so that all relevant considerations are examined before a law 
this sweeping is enacted.







Philip S. Corwin
Partner
Butera & Andrews
1301 Pennsylvania Ave., NW
Suite 500
Washington, DC 20004
202-347-6875 (office)
202-347-6876 (fax)
202-255-6172 (cell)
"Luck is the residue of design." -- Branch Rickey